Addition of a descriptive element to a sign does not prevent risk of confusion

The court in preliminary relief proceedings recently ruled that the sign (SIR) FRANKLIN infringes the Benelux trademark FRANKLIN. Both the sign and the trademark were used by hospitality companies. The user of the sign (SIR) FRANKLIN argued that it did not use the sign as a trademark and that the sign SIR FRANKLIN was not confusingly similar to the trademark FRANKLIN. The Court in preliminary relief proceedings did not agree to this and granted a prohibition of infringement. Read the most important consideration of the judgment (only available in Dutch) below. 

Use of a trademark is said to exist if a sign is used in such a way that a link is created between the sign with which a company is designated and the goods that are put on the market or the services that are provided.

On the basis of Article 2.20(2)(b) of the Benelux Convention on Intellectual Property, a trademark proprietor may prohibit a third party who has not obtained its consent from using in the course of trade a sign that is identical with, or similar to, the trademark for identical or similar goods or services for which the trademark has been registered and if this is likely to give rise to confusion among the relevant public.

The likelihood of confusion should be assessed globally according to the impression that the sign leaves on the average consumer of the goods or services in question, taking into account all the relevant circumstances of the case.

In the case hospitality companies, one of those circumstances is that online reviews are important, because the relevant public often chooses a hotel, restaurant or café on the basis of such reviews. If a third party uses a sign that is similar to a trademark on TripAdvisor, there is a likelihood of confusion. This applies all the more since it is not unusual for hospitality establishments to be part of a chain and to be operated at various locations at the same time.

The addition of 'Boutiquehotel', 'Brasserie' and 'Cocktail bar' are descriptive elements for a hospitality establishment and do not take the attention of the public away from the distinguishing element of a sign and therefore do not prevent that there is no infringement.